What is a Patent Assignment Agreement?
A Patent Assignment Agreement is a document that allows the owner of a certain patent (assignor) to transfer their interest to a second party (assignee). This agreement effectively signifies the transfer of ownership of a patent from one party to another and the conditions that apply with the transfer.
Upon the completion of the Patent Assignment Agreement, the assignee will have earned the legal rights to use, make, and sell the product under the terms of that agreement. The assignee will now also be recognized as the legitimate owner of the patent.
Be reminded that a Patent Assignment Agreement is for assigning patents and not merely granting a license of use. While patent licensing only allows the legal use, selling, and making of a certain patent, it does not transfer the ownership of said pattern to the second party.
A Patent Assignment Agreement will transfer ownership to the second party and remove the
rights to ownership of the previous owner (or the assignor). This will effectively render your rights to your patent moot.
Once this agreement is signed and filed in the United States Patent and Trademark Office (USPTO), it is final and cannot be revoked unless the new owner of the patent is willing to sign another agreement to transfer the ownership of your patent back to you.
Why would I need a Patent Assignment Agreement?
In the United States, businesses and other organizations cannot apply for a patent as it can only be done by an individual. That is why a lot of employees of companies will apply for a patent and then complete a Patent Assignment Agreement in order to transfer the ownership of their patent to be under the company name.
How to fill out a Patent Assignment Agreement?
A Patent Assignment Agreement is a fairly short document. Given the magnitude of its effect, keep in mind that filling out the agreement without mistakes is a must if you do not want complications in the future.
The first paragraph of the form should be filled out with the date when the agreement will be formed. It also requires the complete and legal names of the Assignor (the original owner of the patent) and the Assignee (the party receiving the ownership of the patent). After this paragraph, the entities will only be referred to as Assignor and Assignee respectively.
Note: If there is more than one Assignor, all assignors’ names must be written in full in this paragraph.
List of Agreements
Below the opening paragraph is a numbered list of terms and conditions the Assignor and the Assignee must both agree upon. Read through them thoroughly.
This section is where you must identify the patent that is the subject of this agreement. To do this, Enter the legal and complete name of the patent on the space provided. In addition, input the patent number as well.
If the Assignor requests a fee for the Assignee to pay, input the total amount of your negotiated payment. Ensure that this payment is agreed upon as it will be final once submitted.
This item details and confirms the identity of the Assignor as the person who has the authority to be the Assignor in this situation.
This item details that the Assignee, after the date of signing of this agreement will own all rights to the patent and the transfer will be in effect. In extension, whatever the Assignee does to the patent will be outside of the Assignor’s business
You must identify under which State Law this Agreement will be following. Input the applicable state on the spaces provided. One to identify the State Law that will govern the agreement and another to identify the Court of Law that will adjudicate the proceedings.
This is the agreement between Assignor and Assignee that this Form will signify a decision that is final and irrevocable when signed.
This item is the Assignor’s agreement to their responsibility of providing the necessary documents to complete the validation of this form. To acquire a list of these requirements refer to the State Laws that you have identified in Item 5
All involved parties must affix their signature to the form in order to certify its validity.
Write the legal and complete name of the Assignor. If there is more than one they must also write their name in this area.
If you are the Assignor, affix your signature here. If there is more than one Assignor, ALL assignors must affix their signature. Otherwise, the agreement will only be partial.
Input the date of signing
Indicate the complete and legal name of the Assignee
If you are the Assignee, affix your signature here
Input the date of signing
Here are a few reminders to assist you in completing your Patent Assignment Agreement.
Consult a lawyer
Consulting a legal professional will ensure that your agreement will not have any legal complications. The slightest mistake on your Patent Assignment Agreement can mean a lawsuit that is both unexpected and unwanted.
Notarize your agreement
While it is not required, it is good to have the agreement notarized by the United States Patent and Trademark Office in order to solidify the validity of the document. This will help you avoid any misunderstandings and false statements in the future.
It is also advised to notarize other completed documents related to the assignment.
Record the assignment
Aside from notarization, it is also good practice to record or file the assignment with a public office. This will now allow the Assignee to appear as the legal and sole owner of the patent, which will illegalize any interaction the Assignor will make if they want to enter an agreement with another separate party.